DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first
inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments
Applicant's arguments filed 04/20/2026 have been fully considered but they are not persuasive.
Applicant summarizes the rejection of claim 5 made in the action dated 02/25/2026 on Pg. 3-5 of the remarks. Applicant then argues on Pg. 5 a key point of the invention is the discovery that even slight moisture adsorption due to exposure to air affects the yield due to furnace pressure effects. Applicant argues Xiao does not practice the inventive post drying moisture preventing step, but rather that Xiao dries the material but does not do so in order to avoid increasing the furnace pressure.
However, in response to applicant's argument that Xiao does not dry the material with the purpose of avoiding increasing the furnace pressure, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As previously stated in the rejection, Xiao teaches the SiO gas generating raw materials are dried at 200 °C for 3 hours (Pg. 3, 3.1). Xiao further teaches after the raw material is dried, the dried raw material is loaded into a reactor and is placed under gradual heating with vacuum until a pressure of 3 Pa is achieved (Pg. 3, 3.1). To wit, the instant specification describes that after performing heat drying within a temperature range from 100 °C or more or 400 °C or less for 1 to 240 hours, the raw material is placed in the reactor where the pressure is controlled by a vacuum to a pressure of 100 Pa or less (see [0032]-[0033] in the instant specification). The instant specification describes that if the pressure exceeds this value, then a large amount of water vapor is generated from the SiO gas generating raw material ([0033]).
Accordingly, the drying treatment of Xiao prior to reaction is equivalent to the preventing process described in the instant specification and the teaching in Xiao meets the limitation of performing “a preventing step”.
Applicant argues on Pg. 5-6 Xiao completely removes the Si powder from the preheating prior to placing the material into the reactor. Applicant argues the fact that Xiao teaches a pre-drying of the raw materials, Xiao does not teach the claimed preventing step that is tied to feeding the raw material to the reaction chamber.
However, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As acknowledged by Applicant on Pg. 3 of the remarks and stated by Examiner in the action dated 02/25/2026, Xiao teaches performing continuous generation of SiO gas while teaching that raw materials comprising silicon powder (Si) and quartz rods (SiO2) are loaded into a reactor (Pg. 3, 3.1. Synthesis [of] the SiO Powders). While Xiao describes a continuous process, Xiao does not explicitly teach an arrangement that includes a raw material feed supply connected to a reactor in such a way that a skilled artisan could clearly determine how the “prevented material” is supplied to the reaction chamber in a continuous fashion.
To cure this deficiency, the prior art Li is relied on. Li teaches a process for continuously producing silicon monoxide that includes an apparatus with a furnace body and a vacuum screw feeding device (Abstract). Li teaches the vacuum feeding device includes a vacuum feed tank (1) where silicon powder and silicon dioxide power are loaded and exposed to vacuum prior to opening valve (14) to allow the vacuumed material to transfer through a tube to screw device (5) which feeds material directly into the reaction zone (2) where temperature and pressure conditions are maintained to generate silicon monoxide (Pg. 2, Description of Drawings, Figure 1).
Advantageously, the method of Li including the vacuum feeding device allows for continuous feeding of raw materials and discharge of silicon monoxide under high temperature and high vacuum while affording a simple design with convenient cleaning and maintenance (Pg. 3, par. 3-4).
Applicant argues on Pg. 6 that because Xiao uses Si powder and quartz rods as raw materials, Xiao does not recognize the problem of moisture adsorption. Applicant argues if Xiao did recognize the issue of moisture, the quartz rods would be dried as well.
However, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., feeding quartz rods) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Xiao dries the silicon powder, which has been established as a silicon monoxide gas generating raw material, and meets the limitation as claimed. Examiner further notes there is nothing on the record to show a quartz rod couldn’t be fed via a screw feeder.
Applicant argues on Pg. 6 Li does not teach a moisture preventing step but rather that Li teaches a mechanism to supply SiO raw material into the furnace after evacuating it. Applicant argues Li does not recognize the problem of moisture. Applicant outlines the advantages of Li on Pg. 7.
However, in response to applicant's argument that Li does not recognize the problem of moisture, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Li motivates a skilled artisan to provide raw material in a continuous fashion under vacuum, where advantageously, the method of Li including the vacuum feeding device allows for continuous feeding of raw materials and discharge of silicon monoxide under high temperature and high vacuum while affording a simple design with convenient cleaning and maintenance (Pg. 3, par. 3-4).
Applicant argues on Pg. 7 that the rejection does not describe how the vacuum treatment and processing of Li would somehow be applied to the method of Xiao such that claim 5 is allegedly taught. Applicant argues that if a skilled artisan wants to improve the efficiency of a batch method of making silicon monoxide gas that a skilled artisan would just practice the continuous charging method of Li and not need Xiao. Applicant argues on Pg. 7-8 that quartz rods taught by Xiao cannot be continuously supplied using a screw feeder and that the rejection provides no reason as to how the essential step of Xiao is incorporated into the vacuum feeding chamber of Li. Applicant argues the batch process of Xiao cannot be integrated into the continuous charging/reacting/discharging process of Li.
However, in response to applicant's argument that the method of Li isn’t readily incorporated into the method of Xiao, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Where Xiao does not explicitly teach an arrangement that includes a raw material feed supply connected to a reactor in such a way that a skilled artisan could clearly determine how the “prevented material” is supplied to the reaction chamber in a continuous fashion, Li is relied on.
Li teaches a process for continuously producing silicon monoxide that includes an apparatus with a furnace body and a vacuum screw feeding device (Abstract). Li teaches the vacuum feeding device includes a vacuum feed tank (1) where silicon powder and silicon dioxide power are loaded and exposed to vacuum prior to opening valve (14) to allow the vacuumed material to transfer through a tube to screw device (5) which feeds material directly into the reaction zone (2) where temperature and pressure conditions are maintained to generate silicon monoxide (Pg. 2, Description of Drawings, Figure 1).
Advantageously, the method of Li including the vacuum feeding device allows for continuous feeding of raw materials and discharge of silicon monoxide under high temperature and high vacuum while affording a simple design with convenient cleaning and maintenance (Pg. 3, par. 3-4).
Applicant reiterates arguments from Pg. 3-5 on Pg. 8-9 that the mere feeding step of a raw material under vacuum does not read on the method of claim 5. Applicant argues that the instant invention provides comparative examples 1 and 2 that show dried raw material being exposed to air and not being subjected to the preventing step of claim 5. Applicant argues that exposing the dried material to air results in an increase in furnace pressure and a decrease in yield. Applicant argues this showing weighs in favor of patentability, which is not taught by Li nor Xiao.
However, it appears that comparative example 2 in the instant specification allows the dried raw material to stand exposed to atmosphere (i.e. water in ambient air) for 24 hours. Contrarily, Xiao teaches after drying, the materials are placed in the furnace (Pg. 3, 3.1). While a skilled artisan would not necessarily interpret this as immediate, they certainly would not arrive at the conclusion Xiao waits 24 hours before feeding the material. In this way, the comparison between Comparative Example 2 and Xiao is not concise.
Additionally, to reiterate the point from above, in response to applicant's argument that Xiao does not teach the importance of drying the material, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C.
102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
statutory basis for the rejection will not be considered a new ground of rejection if the prior art
relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the
claimed invention is not identically disclosed as set forth in section 102, if the
differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or
nonobviousness.
Claims 5-6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Xiao et al. (IOP Conf. Ser. Mater. Sci. Eng. 2019, 562, 012094; cited in IDS dated 10/09/2024) in view of Li et al. (CN207680568U English). Note, all the citations bellow are from the English equivalent provided by the Examiner with the exception of Fig. 1 from Li that is reproduced below and is taken from the Chinese version of CN207680568U.
Regarding claim 5, Xiao teaches a method to prepare SiO powders via the continuous generation of SiO gas (Title; Pg. 2, par.2; Figure 1), where raw materials comprising polycrystalline silicon powder (Si) and quartz rods (SiO2) are dried at 200 °C for 3 hours prior to being loaded into the reactor for generation of SiO (Pg. 3, 3.1. Synthesis [of] the SiO Powders). In regards to the limitation a “preventing step for preventing moisture in the atmosphere from being adsorbed onto a silicon monoxide gas generating raw material…” Xiao teaches the SiO gas generating raw materials are dried at 200 °C for 3 hours (Pg. 3, 3.1). Xiao further teaches after the raw material is dried, the dried raw material is loaded into a reactor and is placed under gradual heating with vacuum until a pressure of 3 Pa is achieved (Pg. 3, 3.1). To wit, the instant specification describes that after performing heat drying within a temperature range from 100 °C or more or 400 °C or less for 1 to 240 hours, the raw material is placed in the reactor where the pressure is controlled by a vacuum to a pressure of 100 Pa or less (see [0032]-[0033] in the instant specification). The instant specification describes that if the pressure exceeds this value, then a large amount of water vapor is generated from the SiO gas generating raw material ([0033]).
Accordingly, the drying treatment of Xiao prior to reaction is equivalent to the preventing process described in the instant specification and the teaching in Xiao meets the limitation of performing “a preventing step”.
Xiao further states SiO gas is generated in the process prior to condensing the gas as a solid powder (Pg. 3, 3.1. Synthesis [of] the SiO Powders).
The claim further requires the silicon monoxide gas generating raw material has “a water content of 0.6wt% or less,” to which Xiao does not explicitly state.
However, while Xiao does not explicitly state the water content of the raw materials being fed into the reaction for continuous SiO production, the water content of the raw materials is determined by the conditions used to dry the material. The drying of raw materials to reduce the amount of water in the raw materials is supported in the instant specification in at least [0017].
In this regard, Xiao teaches drying the raw materials at 200 °C for 3 hours (Pg. 3, 3.1. Synthesis [of] the SiO Powders). Xiao further teaches after the pre-dried powders are dried, they are loaded into a reactor, gradually heated to 200 °C with vacuum to a pressure of 3 Pa, then Ar was flowed through the system prior to ramping the temperature to 1450 °C where it was held for several hours to ensure the polycrystalline silicon powder was completely melted before lowering a quartz rod in the reactor into the melt to initiate SiO synthesis (Pg. 3, 3.1).
Comparatively, the instant specification teaches the drying treatment of the raw materials is performed within a range of 100 °C or more and 400 °C or less, for a period of time ranging from 1 hour or more and 240 hours or less ([0032]). The instant specification teaches an example where silicon dioxide and silicon raw materials are dry-treated at 200 °C for 4 hours ([0039]). The instant specification further teaches after dry-treatment, the dry-treated silicon monoxide gas generating raw material is charged into a supply hopper and the material is heated while the pressure is reduced ([0033]). The instant specification further teaches if the pressure exceeds 100 Pa or less, then the water content of the raw material is too high and exceeds 0.6 wt.% ([0032]-[0033]).
Therefore, while Xiao does not explicitly disclose the water content of the raw materials being 0.6 wt.% or less, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established (see MPEP 2112.II.) In the instant case, the raw materials of Xiao would be expected to have the same or similar water content as the instantly claimed raw materials because the materials are pre-dried and subsequently vacuum-heated to a pressure less than 100 Pa in a substantially similar way.
The claim further requires continuously feeding the silicon monoxide gas generating raw material “subjected to the preventing step” into a reaction chamber for generating silicon monoxide (SiO) gas. Xiao teaches performing continuous generation of SiO gas while teaching that raw materials comprising silicon powder (Si) and quartz rods (SiO2) are loaded into a reactor (Pg. 3, 3.1. Synthesis [of] the SiO Powders). While Xiao describes a continuous process, Xiao does not explicitly teach an arrangement that includes a raw material feed supply connected to a reactor in such a way that a skilled artisan could clearly determine how the “prevented material” is supplied to the reaction chamber in a continuous fashion.
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Li teaches a process for continuously producing silicon monoxide that includes an apparatus with a furnace body and a vacuum screw feeding device (Abstract). Li teaches the vacuum feeding device includes a vacuum feed tank (1) where silicon powder and silicon dioxide power are loaded and exposed to vacuum prior to opening valve (14) to allow the vacuumed material to transfer through a tube to screw device (5) which feeds material directly into the reaction zone (2) where temperature and pressure conditions are maintained to generate silicon monoxide (Pg. 2, Description of Drawings, Figure 1 (reproduced below from Li et al. CN207680568U). Figure 1. Reproduced Fig. 1 from the Chinese version of Li et al. CN207680568U depicting the vacuum spiral feeding unit (comprising, 1, 5, 14) which feeds vacuumed material directly into the reaction zone (2).
Advantageously, the method of Li including the vacuum feeding device allows for continuous feeding of raw materials and discharge of silicon monoxide under high temperature and high vacuum while affording a simple design with convenient cleaning and maintenance (Pg. 3, par. 3-4).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to directly feed raw material that has been vacuum treated into a reaction chamber via a connected vacuum feeding device in the method of Xiao in order to allow for continuous feeding of raw materials and production of silicon monoxide product in a manner that is simple in design and convenient for cleaning and maintenance, as taught by Li.
Regarding claim 6, Xiao in view of Li teach the method of claim 5 and Xiao further teaches the raw materials comprise polycrystalline silicon powder (Si) and quartz rods (SiO2) (Pg. 3, 3.1. Synthesis [of] the SiO Powders).
Regarding claim 8, Xiao in view of Li teach the method of claim 5 and Xiao further teaches after the SiO gas generating raw material powder is dried, it is loaded into a reactor chamber and gradually heated to 200 °C with vacuum to a pressure of 3 Pa (Pg. 3, 3.1). Xiao putting the dried SiO gas generating raw material powder into a reactor chamber with subsequent heating under vacuum (i.e. reduced pressure), prior to performing the SiO gas generating reaction, is equivalent to the “storing step for storing silicon gas generating raw material”.
Regarding claim 9, Xiao in view of Li teach the method of claim 5 and the claim further requires “a first supplying step for supplying the silicon monoxide gas generating raw material to a raw material feed hopper under non-exposure to the atmosphere or under reduced pressure, wherein the raw material feed hopper supplies the silicon monoxide gas generating raw material to the reaction chamber,” to which Xiao is silent regarding a feed hopper.
Li teaches a process for continuously producing silicon monoxide that includes an apparatus with a furnace body and a vacuum screw feeding device (Abstract). Li teaches the vacuum feeding device includes a vacuum feed tank (1) where silicon powder and silicon dioxide power are loaded and exposed to vacuum prior to opening valve (14) to allow the vacuumed material to transfer through a tube to screw device (5) which feeds material directly into the reaction zone (2) where temperature and pressure conditions are maintained to generate silicon monoxide (Pg. 2, Description of Drawings, Figure 1 (reproduced below from Li
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et al. CN207680568U). Figure 2. Reproduced Fig. 1 from the Chinese version of Li et al. CN207680568U depicting the vacuum spiral feeding unit (comprising, 1, 5, 14) which feeds vacuumed material directly into the reaction zone (2).
The vacuum screw feeding device that includes a vacuum feeding cylinder (1), a screw feeding device (5) and a valve (14) is equivalent to a “feed hopper” as it serves to continuously supply material to the reactor, which is consistent with the instant inventions description of the “feed hopper”. Exposing the raw material to vacuum is equivalent to the raw material being “under reduced pressure”. See at least [0021], [0027] and Fig. 1, item 160 and 170 in the instant specification.
Advantageously, the method of Li including the vacuum feeding device allows for continuous feeding of raw materials and discharge of silicon monoxide under high temperature and high vacuum while affording a simple design with convenient cleaning and maintenance (Pg. 3, par. 3-4).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to directly feed raw material that has been vacuum treated into a reaction chamber via a connected vacuum feeding device in the method of Xiao in order to allow for continuous feeding of raw materials and production of silicon monoxide product in a manner that is simple in design and convenient for cleaning and maintenance, as taught by Li.
Regarding claim 10, Xiao in view of Li teach the method of claim 5 and 8 and the claim further requires “a second supplying step for supplying the silicon monoxide gas generating raw material to a raw material feed hopper under non-exposure to the atmosphere or under reduced pressure, wherein the raw material feed hopper supplies the silicon monoxide gas generating raw material to the reaction chamber,” to which Xiao is silent regarding a feed hopper.
Li teaches a process for continuously producing silicon monoxide that includes an apparatus with a furnace body and a vacuum screw feeding device (Abstract). Li teaches the vacuum feeding device includes a vacuum feed tank (1) where silicon powder and silicon dioxide power are loaded and exposed to vacuum prior to opening valve (14) to allow the vacuumed material to transfer through a tube to screw device (5) which feeds material directly into the reaction zone (2) where temperature and pressure conditions are maintained to generate silicon monoxide (Pg. 2, Description of Drawings, Figure 1 (reproduced below from Li et al. CN207680568U).
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Figure 3. Reproduced Fig. 1 from the Chinese version of Li et al. CN207680568U depicting the vacuum spiral feeding unit (comprising, 1, 5, 14) which feeds vacuumed material directly into the reaction zone (2).
Li teaches the process is continuous, including the feeding of raw material into feed cylinder (1) (Abstract). Accordingly, the limitation of performing “a second supplying step” is considered met by the teaching of a continuous feed process, as a skilled artisan would conclude a second feed step occurs after performing a first feed step in the process if such a process is continuous. Li’s vacuum screw feeding device that includes a vacuum feeding cylinder (1), a screw feeding device (5) and a valve (14) is equivalent to a “feed hopper” as it serves to continuously supply material to the reactor, which is consistent with the instant inventions description of the “feed hopper”. Li exposing the raw material to vacuum is equivalent to the raw material being “under reduced pressure”. See at least [0021], [0027] and Fig. 1, item 160 and 170 in the instant specification.
Advantageously, the method of Li including the vacuum feeding device allows for continuous feeding of raw materials and discharge of silicon monoxide under high temperature and high vacuum while affording a simple design with convenient cleaning and maintenance (Pg. 3, par. 3-4).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to directly feed raw material that has been vacuum treated into a reaction chamber via a connected vacuum feeding device in the method of Xiao in order to allow for continuous feeding of raw materials and production of silicon monoxide product in a manner that is simple in design and convenient for cleaning and maintenance, as taught by Li.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Xiao et al. (IOP Conf. Ser. Mater. Sci. Eng. 2019, 562, 012094) in view of Li et al. (CN207680568U English) and further in view of Zhao et al. (CN111072038A English Machine Translation).
Regarding claim 7, Xiao in view of Li teach the method of claim 5 and 6 and the claim further requires a silicate is included in the raw material, where the silicate is lithium silicate, to which Xiao and Li are silent.
Zhao teaches a method for generating silicon monoxide where the silicon monoxide is prepared by mixing silicon, silicon dioxide, and metal silicate, where the metal silicate includes lithium silicates (Pg. 3, Disclosure of Invention; Abstract).
Advantageously, incorporating lithium silicate into the raw material combination allows lithium ions to be transferred into the silicon monoxide material, where if too little silicate is added, volume expansion and columbic efficiency effects are not achieved while if too much silicate is included, the capacity of the material is reduced (Pg. 3-4, Disclosure of Invention in at least par. 18-20 on Pg. 3-par. 1 on Pg. 4).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to include lithium silicate in the raw materials in the method of Xiao in order to incorporate lithium into the silicon monoxide material in order to achieve improved volume expansion and columbic efficiencies while reducing capacity loss, as taught by Zhao.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jordan Wayne Taylor whose telephone number is (571)272-9895. The examiner can normally be reached Monday - Friday, 7:30 AM - 5 PM EST; Second Fridays Off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A. Merkling can be reached on (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.W.T./Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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